DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority Claim
2. Applicant has made priority claim that the instance application 19/210295 filed 05/16/2025 be a Continuation of application 17/820375 and a chain of continuation applications starting with application 13/354791 which has an effective filing date of January 20, 2012. However, upon reviewing the original specification of all continuation applications pertaining to the instance application, nowhere is the limitation “based on the determining the identity of the first content, storing an indication, associated with the user, that a first advertisement was output with the first content” found. Therefore, this limitation shall not be given the effective filing date of January 20, 2012. Appropriate action is required.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the second paragraph of 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claim 1-30 and its dependent claims are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 1, 11, and 21 each recites “determining, based on a comparison between the first signature and a plurality of signatures generated based on a plurality of content items, an identity of the first content; and based on the determining the identity of the first content, storing an indication, associated with the user, that a first advertisement was output with the first content”. First, without providing identity of content items in the claims, one skilled in the art cannot determine the identity of the 1st content based on the comparison. In other word, unless identity of the plurality of content items are previously known and provided in the claims, the determining step cannot be performed. Secondly, based on the determined identity and information recited in the claims, there is NO fact or evidence described in the claims that leads to a conclusion or an inference that an advertising was output with the first content. Therefore, claims 1, 11, and 21 and their respective dependent claims are deemed indefinite.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
6. Claims 1-30 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beiter et al. (US Publication 20080114812) in view of Barton et al. (US Publication 2016/0080813).
Regarding claim 1, Beiter discloses a method comprising:
receiving, by a computing device and from a user device associated with a user, a first signature generated based on decoded first content (Beiter, para’s 0060-0065, receiving a fingerprint “first signature” corresponding to a file from a client system; the fingerprint was generated by the client system from a set of files “decoded first content” that was previously retrieved and stored in the storage of the client system);
determining, based on a comparison between the first signature and a plurality of signatures generated based on a plurality of content items, an identity of the first content (Beiter, para’s 0060-0065, comparing the received fingerprints to the stored fingerprints to determine the assets, if any, that are stored in the storage system 134. In a preferred embodiment, an asset is considered to be stored in the storage system 134 if at least X of the digital objects that make up the asset are stored in the storage system, where X can be any whole number greater than or equal to 1. For example, if Asset A consists of digital objects DO1, DO2, DO3, DO4 and DO5, and digital objects DO1 and DO3 are stored in storage system 134, then, in a preferred embodiment where X is greater than or equal to two, Asset A is considered to be stored in storage system 134); and
based on the determining the identity of the first content, storing an indication, associated with the user, that one or more portions was output with the first content (Beiter, para’s 0060-0065, based on the comparison, an asset is considered to be stored in the storage system 134 if at least X of the digital objects that make up the asset are stored in the storage system, where X can be any whole number greater than or equal to 1. For example, if Asset A consists of digital objects DO1, DO2, DO3, DO4 and DO5, and digital objects DO1 and DO3 are stored in storage system 134, then, in a preferred embodiment where X is greater than or equal to two, Asset A is considered to be stored in storage system 134).
Beiter does not explicitly disclose but Barton discloses the one or more portions being a first advertisement (Barton, para’s 0111, 0222-0223, each content includes advertisement; a client system decides which ads to capture on its own and presents them to the consumer based on the metadata received from the service 1101. For example, the service transmits a carouseled channel 1202 containing advertisements A, B, C, D, E, and F. Client system 1-1203 may tune in and capture advertisements B and E in a carouseled channel 1202 based on its PRIZM code, while client system 2-1204 captures advertisement D and client system n--1205 captures advertisement B. The service 1101 can be a one-way, broadcast mechanism, yet the consumer gets a completely targeted advertisement; claims 8-10 further disclose determine whether the tracking data for other devices identifies an advertisement in the first set comprising: determining that the first set includes the particular advertisement that is also in the second set of programs that have been viewed at a second device, the second set of programs being identified by the tracking data; this disclosure illustrates that each client system can capture different advertisement in a set of program content, further illustrates a method for determining whether the same advertisement or different advertisements appears in a first set of program and a second set of program, and storing the first set of program and the second set of program includes storing the different advertisements; see also Tanaka et al. US Publication 2008/0307472, incorporating commercial messages into broadcast content).
It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate Barton‘s features in Beiter’s invention for creating an effective product placement and advertisement system.
Regarding claim 2, Beiter-Barton discloses the method of claim 1, wherein the first content comprises the first advertisement (Barton, para’s 0111, 0222-0223, each content includes advertisement).
The motivation and obviousness arguments for combining the references are the same as claim 1.
Regarding claim 3, Beiter-Barton discloses the method of claim 1, wherein the first signature was generated by the user device (Beiter, para’s 0060-0065, receiving a fingerprint “first signature” corresponding to a file from a client system; the fingerprint was generated by the client system from a set of files “decoded first content” that was previously retrieved and stored in the storage of the client system).
Regarding claim 4, Beiter-Barton discloses the method of claim 1, wherein the first signature comprises a signature generated based on the first content decoded for output by an output device (Beiter, para’s 0060-0065, receiving a fingerprint “first signature” corresponding to a file from a client system; the fingerprint was generated by the client system from a set of files “decoded first content” that was previously retrieved and stored in the storage of the client system).
Regarding claim 5, Beiter-Barton discloses the method of claim 1, wherein the first content is a television program, and wherein the first signature was generated based on decoded portions of television program being sent to a television for output (Barton, para. 0010, television programming).
The motivation and obviousness arguments for combining the references are the same as claim 1.
Regarding claim 6, Beiter-Barton discloses the method of claim 1, wherein the first signature comprises a hash of at least a portion of the first content (Beiter, para. 0037, hash signature).
Regarding claim 7, Beiter-Barton discloses the method of claim 1, wherein the user device is a gateway or a set-top box (Barton, fig. 1, receiving TV programming through a communication network that may include network gateway).
The motivation for combining the references would have been to effectively accommodating user device to receive TV programming.
Regarding claim 8, Beiter-Barton discloses the method of claim 1, further comprising receiving identification information, associated with the user, corresponding to the first signature (Beiter, para’s 0041-0044, FIG. 3A illustrates accounting database 191 according to some embodiments of the invention. Database 191 may include a table 302 (or other data structure) that associates CUIDs with digital object identifiers (e.g., digital object fingerprints and/or other digital object identifiers). In the example shown, CUID-1 is associated with digital object identifiers DOID-1, DOID-3 and DOID-5. Accordingly, accounting database 191 indicates that the client/user associated with CUID-1 has previously downloaded or otherwise acquired the digital objects identified by digital object identifiers DOID-1, DOID-3, and DOID-5).
Regarding claim 9, Beiter-Barton discloses the method of claim 1, further comprising:
receiving, by the computing device and from a second user device associated with a second user, a second signature generated based on decoded second content, wherein the second content comprises a second content item (Beiter, para. 0032, FIG. 1 illustrates a system 100 according to one embodiment of the invention. System 100 includes at least one server system 102 and one or more client system 104; para’s 0060-0065, receiving a fingerprint “second signature” corresponding to a file from a client system; the fingerprint was generated by the client system from a set of files “decoded second content” that was previously retrieved and stored in the storage of the client system);
determining, based on the second signature, a second identity of the second content item; and storing, based on the determining the second identity, a second indication, associated with the second user, that a second advertisement was output with the first content (Beiter, para’s 0060-0065, comparing the received fingerprints to the stored fingerprints to determine the assets, if any, that are stored in the storage system 134. In a preferred embodiment, an asset is considered to be stored in the storage system 134 if at least X of the digital objects that make up the asset are stored in the storage system, where X can be any whole number greater than or equal to 1. For example, if Asset A consists of digital objects DO1, DO2, DO3, DO4 and DO5, and digital objects DO1 and DO3 are stored in storage system 134, then, in a preferred embodiment where X is greater than or equal to two, Asset A is considered to be stored in storage system 134; Barton, para’s 0111, 0222-0223, each content includes advertisement; a client system decides which ads to capture on its own and presents them to the consumer based on the metadata received from the service 1101. For example, the service transmits a carouseled channel 1202 containing advertisements A, B, C, D, E, and F. Client system 1-1203 may tune in and capture advertisements B and E in a carouseled channel 1202 based on its PRIZM code, while client system 2-1204 captures advertisement D and client system n--1205 captures advertisement B. The service 1101 can be a one-way, broadcast mechanism, yet the consumer gets a completely targeted advertisement; claims 8-10 further disclose determine whether the tracking data for other devices identifies an advertisement in the first set comprising: determining that the first set includes the particular advertisement that is also in the second set of programs that have been viewed at a second device, the second set of programs being identified by the tracking data; this disclosure illustrates that each client system can capture different advertisement in a set of program content, further illustrates a method for determining whether the same advertisement or different advertisements appears in a first set of program and a second set of program, and storing the first set of program and the second set of program includes storing the different advertisements; see also Tanaka et al. US Publication 2008/0307472, incorporating commercial messages into broadcast content). The motivation and obviousness arguments for combining the references are the same as claim 1.
Regarding claim 10, Beiter-Barton discloses the method of claim 1, further comprising storing, based on the determining the identity of the first content, viewing data indicating the first content and associated with the user (Beiter, para. 0044, FIG. 3B illustrates linked lists 352a-N, 354a-N for associating CUIDs with DOIDs instead of table 302; viewing data such as a linked list is well-known in the art).
The motivation for combining the references with well-known technique in the art would have been for allowing user to control playback of recorded content.
Claims 11-30 are rejected for the same reasons set forth in claim 1-10. Beiter-Barton further discloses processors, memory, and computer-readable medium (see Beiter, para’s 0010 and 0032-0035).
7. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. These include:
Ueda et al., US Patent 8,166,556
Vogel, US Publication 2012/0020647
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOI H TRAN whose telephone number is (571)270-5645. The examiner can normally be reached 8:00AM-5:00PM PST FIRST FRIDAY OF BIWEEK OFF.
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/LOI H TRAN/Primary Examiner, Art Unit 2484
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